IP Law Daily, TRADEMARK—S.D. Cal.: Remittitur granted in eye medication infringement dispute, (Oct 2, 2025)

By Kevin M. Finson, J.D.

Damages awarded by a jury were excessive because they exceeded even the plaintiff’s expert’s calculations and because there was not sufficient reprehensibility to justify a multimillion dollar punitive damages award.

A compounding pharmacy was entitled to either remittitur of a damages award in favor of a competitor or a new trial, the U.S. District Court in San Diego has held. The evidence in the case was sufficient to avoid judgment as a matter of law, but the damages awarded were still excessive (ImprimisRx, LLC v. OSRX, Inc., No. 3:21-cv-01305-BAS-DDL (S.D. Cal. Sept. 26, 2025)).

ImprimisRx, LLC (ImprimisRx) was a compounding pharmacy which sold numerous drugs used in optometry and ophthalmology under names which were formed from shortened forms of the ingredients. For example, the product “Pred-Moxi” contained the ingredients prednisolone and moxifloxacin.

ImprimisRx brought suit for trademark infringement and unfair competition against OSRX, Inc. and Ocular Science, Inc. (collectively, OSRX), alleging that they sold drugs under identical names. A jury found OSRX liable for $14.5 million in compensatory damages, and also awarded $20.4 million in punitive damages. OSRX moved for judgment as a matter of law, and in the alternative sought remittitur or a new trial.

Judgment as a matter of law. OSRX argued that the marks were generic and therefore could not have been infringed, or that they were merely descriptive and lacked secondary meaning, because the names were simply abbreviations of the ingredients. The court found that there was sufficient evidence from which the jury could have found secondary meaning, including survey responses showing actual confusion.

OSRX also argued that there was not sufficient evidence of damages. The court found that the jury could reasonably have found damages based on profits made by OSRX, and findings of willfulness were based on the jury’s assessment of witness credibility.

Remittitur/new trial. The court found that while the evidence of damages was sufficient to avoid judgment as a matter of law, it was still very limited. The jury verdict was in fact four times greater than the amount requested by ImprimisRx’s expert as to a certain period of time, and for other periods there was far less specific evidence.

The court reduced the compensatory damages award from $14,500,000 to $10,249,538, using the methodology provided by ImprimisRx’s own damages expert. As to punitive damages, the court found that the case lacked the degree of reprehensibility usually associated with such cases and reduced the award from $20.4 million to $1 million.

The court denied the motion for judgment as a matter of law and granted remittitur, or, if ImprimisRx did not accept the remittitur, indicated that it would grant a new trial.

The Case is No. 3:21-cv-01305-BAS-DDL.

Judge: Bashant, C.

Attorneys: Armine C. Alajajian (Ellis George LLP) for ImprimisRx, LLC. Carolynn Kyungwon Beck (Eisner, LLP) for OSRX, Inc. and Ocular Science, Inc.

Companies: ImprimisRx, LLC; OSRX, Inc.; Ocular Science, Inc.

Cases: Trademark CaliforniaNews